Trade Mark Opposition Lawyers

Whether you wish to register an opposition to a trade mark or you need to defend against a claim, our team of expert solicitors are on hand to help.

Supported by an experienced team, our dual-qualified lawyers can represent you at the UK Intellectual Property Office, the EU Intellectual Property Office and, via our network of like-minded associates, anywhere else in the world.

What is a Trade Mark Opposition?

Once the UK Intellectual Property Office (UKIPO) has completed its examination of a trade mark application, the proposed registration is published in the online Trade Marks Journal. From this point, there is an initial two month period during which a third party can file an opposition to the registration.

An opposition can be based on one of two grounds:

Absolute grounds – An opposition on absolute ground is where the trade mark is unsuitable for registration. This often occurs when the opponent notices that the trade mark is descriptive of the goods or services offered. Or, the trade mark is a generic term for the goods or services and should be available to all.
Relative grounds – An opposition on relative grounds is where a trade mark registration is deemed by the opposition to conflict with a previously registered mark or right (even an unregistered one) owned by the opposing party.

A party may also file an opposition against the entirety of the application or only against specific goods and services covered by the application.

Before a formal trade mark opposition, the opponent can issue a ‘Notice of Threatened Opposition’. This informs the applicant that a formal opposition may be filed should the applicant proceed with their trade mark registration. This allows the applicant to reach out to the opponent to see if there is a way both parties can negotiate a compromise without needing to resort to legal action. A Notice of Threatened Opposition also extends the opposition period to three months.

Both parties may negotiate amendments to the application, such as altering the designated class of goods or services or withdrawing the contested part of the application entirely. Should this be unsuccessful, the opponent can file a ‘TM7 Notice of opposition and statement of ground’ and proceed with an official trade mark opposition.

Testimonial

“We’ve been using Briffa as our trade mark agent for UK and Europe ever since we started selling on Amazon UK and in other EU countries. We’re very happy with their service and professional support.

William has been an excellent trade mark advisor and has assisted us throughout the process, from the initial searches for a potential opposition to the final release of our trade mark document. The process has been seamless and it is always a pleasure to work with him and his team. We never had any issues with our trade marks and it would be our pleasure to recommend Briffa’s services to anyone wishing to register their UK and European trade marks.”

e-Luxury Online

How can we help?

Defending Your Application

Once your trade mark application has successfully passed the UKIPO examination, it is published in the online Trade Marks Journal. It is open for anybody to file an opposition or notice of threatened opposition.

If you receive either of these, our highly experienced team can guide you through the steps required to respond quickly and effectively defend your application.

This process can have many steps should it go to a tribunal and then potential appeals. Therefore, the sooner you seek professional help, the greater your chance of successfully defending against a claim.

Whether this means negotiation to prevent a formal opposition claim or the submission of witness statements and evidence leading to a favourable judgment in a tribunal, our solicitors are experienced in opposition proceedings. They can get started on your case by booking a free consultation.

Opposing An Application

Your trade mark is essential for keeping your brand safe, it is often the mark of quality your customers look out for when making a purchasing decision, therefore it is crucial that no other trade marks are registered which may cause confusion and damage your reputation.

We can keep an eye out for trade mark applications that could damage your brand, assessing the similarity of applications to your own mark as well as the class of goods or services the applicant is servicing.

If an application appears to be infringing on your trade mark, we can assist and advise on the next steps. We can help you submit a notice of threatened opposition, facilitate negotiations and prepare for the submission of an official trade mark opposition.

If you’ve already begun opposition proceedings and find yourself needing further support as the case progresses, we can oversee your case and keep your brand protected.

Why Choose Briffa?

We have been providing trade mark opposition services since 1995

We offer a free consultation to discuss your trade mark opposition needs before any fixed fee quotes are given

We have offices in the UK and the Republic of Ireland, plus a global network of associates

We offer an industry leading service with short turnaround times and business-focused advice

Frequently Asked Questions

Can I challenge a trade mark application?

You can challenge a trade mark application if you think it may be an infringement or inappropriate.

Anybody can submit an opposition to an application on ‘absolute grounds’. This is where a trade mark is too generic or descriptive of a product or service, for example, if an application attempted to trade mark a generic industry term such as ‘photographer’ or ‘shop’. In reality, such attempts would not pass an initial examination, however, terms relating to niches or specific industries may go unnoticed by the UKIPO but still be considered too generic by organisations familiar with the industry. It’s important for a trade mark to adequately distinguish the brand from the product or service in some manner.

If you already hold a registered trade mark and believe that an application is likely to infringe on your own, you may submit an opposition on ‘relative grounds’. It is worth making sure that the applicant is registering their trade mark in a class similar to your own in a manner that is likely to cause confusion before taking on the time and financial commitments associated with the trade mark opposition procedure. For example ‘Penguin’ exists as a publishing company, chocolate bar and clothing company, as none of these is likely to be mistaken for the other.

What are the steps in the trade mark opposition procedure?

Without the benefit of legal advice, this can be a complicated procedure, but here is a brief summary of how it works in the UK (for more information please get in touch, we’d be happy to discuss your situation):

Notice of threatened opposition – If a registered trade mark holder is considering opposing an application they might first file a notice of threatened opposition. This extends the opposition period by a further month and gives the parties more time to enter into settlement discussions and hopefully come to an agreement that is beneficial for both parties.
Formal opposition – If no agreement can be reached, a notice of opposition and statement of grounds can be filed.
Applicant’s response – This is the applicant’s opportunity to defend the opposition and explain why they think it should be dismissed.
Cooling off period – There is the possibility, after both sides have written their statements, for a ‘cooling off’ period of 9 to 18 months for further negotiations and discussion to take place.
Witness evidence – In most oppositions the parties will also submit factual evidence to support their legal arguments.
Decision – The hearing officer will make a decision on the case, either based on final written submissions or an oral hearing. The successful party is normally awarded scale costs.
Appeal – The losing party has 28 days if they wish to submit an appeal to either an appointed person or the High Court. The appointed person’s decision is final and cannot be appealed, however High Court decisions may be challenged in the court of appeal.

Within each of these steps are several smaller steps and possibilities depending on the response, or lack of, from either party. Thankfully our expert team of trade mark lawyers are well practiced in trade mark opposition proceedings and would be happy to help!

How long does the trade mark opposition process take?

It is difficult to say how long the opposition process will last as it depends on many factors. Opposition must be brought within two months of the publication of the trade mark application in the on-line Trade Marks Journal (three months if a notice of threatened opposition is served), and the shortest route to completing the process may include a swift resolution via negotiations between both parties at this stage. If this is unsuccessful there is the potential for a 9 to 18 month cooling off period for further negotiation followed by a lengthy tribunal/hearing/appeals process.

In the most extreme circumstances the process can last for years, however several months may be a more realistic timeframe.

Key Contacts for Trade Mark Oppositions

Meet some of our specialist trade mark opposition lawyers who can assess your case and advise on the best solution for you. Find the key contacts for this area below, or follow the link to meet the rest of the team.